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Tuesday, August 2, 2011

How Does the Patents Act Protect the Interests of the Patentee?

In the last post, I had hinted at certain provisions of the Patents Act, 1970 which protect the interests of the patentee. It’s surprising that Indian discussions on patents rarely discuss those aspects of the law which provide succour to the patentee.

One provision whose complete import, in my humble opinion, has not been fully explored is Section 13(4) of the Patents Act.

Section 13 of the Patents Act deals with the investigation that a patent examiner is expected to undertake to check for anticipation of a patent application by prior publication or prior claim.

After enumerating the literature, patent and non-patent, that the examiner may review to assess the novelty of the invention claimed in an application, Section 13, in sub-section (4) states that the examination and investigation required under Sections 12 and 13 of the Act shall not warrant the validity of the patent.

Section 13(4) further states that no liability shall be incurred by the Central Government or any officer thereof by reason of, or in connection with, any examination or investigation or any report or other consequent proceedings.

This provision i.e.Section 13(4) has been commonly and rightly interpreted as denying any kind of presumptive validity to a patent granted under the Act. But I think there is more to the provision than merely denying presumptive validity...

Besides denying presumptive validity and shielding examiners from liability of any kind, Section 13(4) also ensures that the patentee does not suffer or is not penalised or held responsible for any act of commission or omission by the examiner during the examination of the application.

In other words, my point is that if the Act requires the examiner to perform a certain task or duty, which the examiner fails to perform, the validity of the patent shall not be impugned on grounds that the examiner did not perform such duty.

Simply put, the patentee shall not be denied a remedy citing an oversight or dereliction on the part of the examiner.

What is the basis for such a proposition? First, this is logical because if the patentee or the applicant for a patent has fulfilled all his obligations under the Act, he must not pay the price for an act of neglect by the examiner.

Not just that, if the legislature indeed wanted the patentee to take the rap on his knuckles for oversight or neglect on the part of the examiner, then Section 64 of the Act, which lists grounds of revocation, would have provided for an additional ground such as dereliction of duty or non-performance of mandatory tasks by the examiner.

None of the grounds for revocation provided in Section 64 permit assailing the validity of a patent on grounds of improper examination or incomplete search or improper preparation of reports by the examiner.

This is further supported by the fact that both the IPAB or the High Court, which have the authority to entertain a petition or a counterclaim for revocation of a patent under Section 64, are vested with original powers to test the validity of the patent on substantive grounds, not administrative ones.

Stated otherwise, the scope of enquiry of the IPAB or the High Court is restricted to testing the validity of the patent solely on grounds detailed in Section 64, and no other. The very reason the IPAB and the High Court are vested with original powers is so that they may step into the shoes of the examiner as well as the arbiter of the law, and verify for themselves if the invention claimed indeed deserved the patent.

To capture the post in a nutshell, the effect of Section 13(4) is three-fold:

1. The patentee cannot claim to enjoy any presumptive validity merely on account of grant of the patent after due examination;

2. The examiner shall not be exposed to liability of any kind for any act or omission performed in the course of his duty; and

3. The grant of the patent shall not be assailed citing non-performance of any obligation by the examiner. The patent’s validity may be challenged only and only on grounds mentioned in Section 64.

I am sure there are principles of administrative law, which support this interpretation. I’ll try and bring them to the attention of our readers in the next few days. Until then, corrections, opinions and assistance with case-laws are welcome!

2 comments:

Moving a step ahead on the issue of validity of a patent [or more particularly the claims(s) of a patent], the same Patents Act which on one hand denies the presumptive validity of the patent granted by the Controller, also provides for certificate of validity, which may be granted by IPAB/High Court in respect of claim(s) of the patent which were contested in a revocation proceeding under section 64 or 104 and were upheld by IPAB or High Court. This is rather a rarely discussed provision and perhaps never resorted to by IPAB or High Court in any proceeding (atleast I’m not aware of and please enlighten me if I’m wrong!). But this clearly tends to set two standards of validity of patents under the same Act and force us to draw an inference that the apparent examination of validity of claims by High Court/IPAB is better than the one conducted by the so technically qualified Examiners at the Patent Office. Of course, it is agreeable that since the claims in a revocation proceeding have passed the litmus test of validity before the appellate authority and thus they are entitled to be identified as MORE valid, but that doesn’t take away our right to ask for the reason as to why Controller’s passed patents have no validity at all? Isn’t it itself is indicative of the standards of examination at the Patent Office level? Will it be amended if we improve on the standards of examination, if at all, in future? I’m not able to find these answers as of now.

Regarding the liability of Examiners, if we go strictly by statute, any negligence or laxity on part of the Examiners (who are actually working on behalf of the Controller only) cannot atleast be a ground of opposition, not only because it is not listed in section 64, but also because the public is not privy to the internal communication between the controller and the examiner, especially reports by the examiners to the Controller (section 144) or any such information as to the extent of search conducted by the examiner or the databases looked upon by him. The only circumstances, when such information could be disclosed by the officers are when the Court or IPAB asks them to do so in any legal proceeding (see section 76 and 144), which is not a regular case and goes with a rider that “unless the court certifies that the production or inspection is desirable in the interests of justice, and ought to be allowed”. Thus the burden of proof is on the plaintiff to prove first that the case fulfills the criteria. Again I’m not sure if this has been allowed in any case.

I completely agree with you Ashwani. Even if the Court calls for records invoking its powers under Section 144, the Court still cannot assail or impugn the validity of the patent if the records reveal oversight of some kind on the part of the patent office. In other words, the legislature does not intend to vest the Court with the power to expand its scope of enquiry to the process of examination, despite giving it powers to call for records under Section 144.

If i were to hazard a guess as to the reason why Section 144 allows the Court to delve into confidential records, I think it could probably relate to understanding the prosecution history better and might help in the use of doctrine of prosecution history estoppel. There's another interesting aspect with respect to the effect of Section 64 on suit proceedings, on which the Act is mysteriously silent. Will post on it in the next few days.